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From Riches to Rags™ Series: 
Determining if a Plant is Patentable Before You File

A Recent Court Decision May Deny Your U.S. Plant Patent Application Unless You Understand this...

Wild vs. Cultivated Can Mean the Difference between Patent vs. Non-Patent

There is nothing more frustrating and expensive than a plant patent application being denied. Therefore, it is always imperative that a company does everything in its power to prevent this from happening.  (GRIPS clients rarely have this problem because of the careful planning that occurs before an application is filed.)

Sometimes plant breeders become so excited about a newly discovered plant that they rush into the patent process before they meet all the criteria of a plant patent. A recent court case confirmed that these applications are not valid.  Sometimes they will be approved by the Patent Office accidentally, but these grant applications can easily be thrown out by a court as an invalid patent if it is challenged by someone else - even if your patent has been granted many years ago.

A recent court decision  (6 August 2012) by a U.S. Patent Office appeals board (1) provides more insight into qualifying for a plant patent invention as it relates to the cultivated vs. wild areas where the plant was discovered.

Practical Application:
Depending on how your breeding program obtains new plant material, this court case may help your organization refine your protocols for plant discoveries, particularly in documenting the discovery.

There are two ways to qualify as an inventor for a plant patent in the United Stated Patent and Trademark Office (USPTO). 

Qualification One is when someone changes a plant through human intervention to create a new characteristic or expression of the plant.

This may seem like an obvious definition of invention. The next step in this process is to then reproduce those changes reliably through asexual propagation.

Qualification Two is when the potential inventor discovers a new plant in a cultivated area, identifies a new characteristic expression of the plant and then reproduces those changes reliably through asexual propagation.

A person cannot claim to be an inventor if they merely discover something in nature – in that case, they are a "discoverer."

What Exactly Do They Mean by the Phrase "Cultivated Area?"
Unfortunately, the patent office fails to define what they mean by "cultivated." The recent court case does, however, provide some guidance.

Integrating these types of questions into your plant discovery data assessments can help ensure that you clearly demonstrate to the examiner that the plant was discovered in a cultivated area.

Plant patent applications rely on complete descriptions of the plant and the area and circumstances of discovery should not be an exception. Taking a few extra moments to jot down descriptive notes of the area when a plant is discovered could mean the difference between later obtaining a patent or not!

Understanding the Background for this Court Decision

Patents for Natural Things
To become an inventor through the eyes of the United Stated Patent and Trademark Office by trying to patent something discovered in nature, under U.S. patent law, you must manipulate that discovery and in some way use human intervention to change the discovery in some way that has not yet been done by others.

Laws for U.S. plant patents have a slight variation to the above statement in that a manipulation, say through a standard cross-breeding program, is not required as long as

1)The plant discovered was found in a cultivated area AND

2)The inventor is able to successfully and predictably repeat the unique characteristics of the plant (for which you are seeking patent protection) through ASEXUAL propagation.

Exceptions to "Plant" Patent Protection
There are two exceptions to U.S. plant patent protection.
They are 1) tuber propagated plants (such as potatoes – potatoes can benefit from other types of patent-like protection) and plants found in uncultivated areas.

The distinction between wild and cultivated is established in the patent law to prevent people from applying for patent applications on things of nature.

"Hey – I thought I had a patent!"

Walter and His Oak Trees:  The Story that Inspired Some Legal Clarification
on "Wild" vs. "Cultivated"

Walter Beineke filed two plant patent applications  for two oak trees. Walter was pleased with the superior quality of his oak trees because of their excellent timber quality and strong central stem tendency.

The patent application examiner at the USPTO reviewed the statements (evidence) Walter provided in his application on how he came to discover the oaks and the examiner decided that the area of discovery was, in fact, not a "cultivated" area as Walter stated and as the law required.

Walter was very surprised by the examiner's assertion because after all, he found the trees in someone's front lawn – surely that is a cultivated area!

Strongly believing that he should be an inventor recognized by the Patent Office, and desiring the financial compensation patent protection could offer through licensing opportunities  (which would help offset the years of time and financial investment he committed to these two oak trees); Walter took his patent application to an appeals board within the patent office.

This federal court (called the United States Court of Appeals for the Federal Circuit) reviewed Walter's case and in the end, agreed with the patent examiner in denying Walter patent protection. Unfortunately, while Walter still had his wonderful trees that he could sell, he lost the opportunity for higher licensing rates that patent protection can offer.

Where did Walter go wrong?

How can you make sure your breeding programs and policies do not create the same kind of mistakes Walter's did?

How can you make sure you do not spend thousands of dollars pursuing patent protection when the patent office will not be able to identify an actual invention?

If Walter had some good analysis questions on determining cultivated vs. wild locations, he could have saved himself thousands of dollars and tremendous frustration.

As already mentioned, Walter discovered the trees in a yard; however, it was established during the hearing that the trees likely started growing in the 1880s or earlier, while the house (and presumably the cultivated yard) was not constructed until the 1930s. The trees, and the history of how they came to be, predate the establishment of the cultivated area. This fact, or rather the lack of facts and the unknown, disqualified Walter's invention in the eyes of the patent office.

If you think your plant does not qualify for a U.S. plant patent, there are still other ways to protect the plant and therefore earn higher royalty rates. One example is by obtaining a registered trademark, so if the shoe doesn't fit, so to speak, save your money and invest it in marketing the plant.

Patenting Plant Discoveries in the United States

  (1)  United States Court of Appeals for the Federal Circuit Decision Nos. 2011–1459, 2011–1460, 6 August 2012
  (2)  per the patent law found in 35 U.S.C. § 161
  (3)  U,S, Plant Application Numbers 10/919,574 and 10/919,902
  (4)  Court decision discussion found on
  (5)  Motivations and discussion of Walter's feelings are for demonstration purposes only and are conjectures of the author of this article.
  ***This article is for educational purposes only and does not constitute legal opinion or advice. The author of this article is not an attorney.

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